USPTO Patents Application 09870801

1

2
3
4
5

10

11

12

13

14

15

16

17

18

19

20

21
22
23
24
25 II
26
27
28

'Orrick
Herrington
sutcliffe llp

SILICOH VALLEr

WILLIAM L. ANTHONY (State Bar No. 1 06908)
ERIC L. WESENBERG (State Bar No. 139696)
MARK R. WEINSTEIN (State Bar No. 193043)
ORRICK, HERRINGTON & SUTCLIFFE, LLP
1000 Marsh Road
MenloPark,CA 94025
Telephone: (650) 614-7400
Facsimile: (650) 614-7401

STEVEN ALEXANDER (admitted Pro Hac Vice)

KRISTIN L. CLEVELAND (admitted Pro Hac Vice)

JAMES E. GERINGER (admitted Pro Hac Vice)

JOHN D. VANDENBERG

KLARQUIST SPARKMAN, LLP

One World Trade Center, Suite 1600

121 S.W. Salmon Street

Portland, OR 97204

Telephone: (503) 226-7391

Facsimile: (503) 228-9446

Attorneys for Defendant and Counterclaimant,
MICROSOFT CORPORATION

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

INTERTRUST TECHNOLOGIES
CORPORATION, a Delaware corporation,

Plaintiff,

v.

MICROSOFT CORPORATION, a
Washington corporation,

Defendant.

MICROSOFT CORPORATION, a
Washington corporation,

Counterclaimant,

v.

INTERTRUST TECHNOLOGIES
CORPORATION, a Delaware corporation,

Counter Claim-Defendant.

CASE NO. C01-1640 SBA

MICROSOFT CORPORATION'S
ANSWER AND COUNTERCLAIMS TO
INTERTRUST'S THIRD AMENDED
COMPLAINT; JURY DEMAND

DOCSSV 1:165623.1

Microsoft Corporation's Answer and
Counterclaims to intertrust's third amended
complaint: Case No. C 01-1640 SBA

1 Defendant Microsoft Corporation ("Microsoft") answers the Third Amended

2 1 Complaint of InterTrust Technologies Corporation ("InterTrust") as follows:

3 I 1 • Microsoft admits that the Third Amended Complaint purports to state a

4 J cause of action under the patent laws of the United States, 35 United States Code, §§ 271 and

5 1 281 . Microsoft denies that it has infringed or now infringes the patents asserted against Microsoft

6 in the Third Amended Complaint. Microsoft denies any and all remaining allegations of

7 paragraph 1 of the Third Amended Complaint.

8 2. Microsoft admits that the Third Amended Complaint purports to state a

9 cause of action over which this Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and
10 1338(a).

Ill 3 . Microsoft admits, for purposes of this action only, that venue is proper in

12 this judicial district. Microsoft denies any and all remaining allegations of paragraph 3 of the

1 3 Third Amended Complaint.

14 ; 4. On information and belief, Microsoft admits the allegations of paragraph 4

15 of the Third Amended Complaint.

16 I 5. Microsoft admits the allegations of paragraph 5 of the Third Amended

17 j Complaint

18
19

6. Microsoft admits, for purposes of this action only, that it transacts business
in this judicial district. Microsoft denies any and all remaining allegations of paragraph 6 of the

20 | Third Amended Complaint.

21

22

7, Microsoft admits that on its face the title page of U.S. Patent No. 6,1 85,683
Bl ("the '683 Patent") states that it was issued February 6, 2001, is entitled 'Trusted and secure

23 J techniques, systems and methods for item delivery and execution," and lists "InterTrust

f Orrick

ERR1NGTON
SUTCLIFFE LLP
Silicon Valley

24
25
26
27
28

Technologies Corp," as the assignee. Microsoft denies that the '683 Patent was duly and lawfully
issued. Microsoft further denies any and all remaining allegations of paragraph 7 of the Third
Amended Complaint.

DOCSSVl:16.S623.I

-1-

Microsoft Corporation's Answer and
Counterclaims to intertrust's third amended
complaint: Case No. C 01-1640 SBA

1

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26

8. Microsoft admits that on its face the title page of U.S. Patent No. 6,253,193
Bl ("the *193 Patent") states that it was issued June 26, 2001, is entitled "Systems and methods
for the secure transaction management and electronic rights protection " and lists "InterTrust
Technologies Corporation" as the assignee. Microsoft denies that the c 193 Patent was duly and
lawfully issued. Microsoft further denies any and all remaining allegations of paragraph 8 of the
fhird Amended Complaint.

9. Microsoft admits that on its face the title page of U.S. Patent No. 5,940,504
;*the '504 Patent") states that it was issued August 17, 1999, and is entitled "Licensing
nanagement system and method in which datagrams including an address of a licensee and
ndicative of use of a licensed product are sent from the licensee's site." Microsoft denies that the
504 Patent was duly and lawfully issued. Microsoft lacks sufficient information to admit or deny
iny and all remaining allegations of paragraph 9 of the Third Amended Complaint.

1 0. Microsoft admits that on its face the title page of U.S. Patent No. 5,920,861
44 the 4 861 Patent") states that it was issued July 6, 1999, is entitled 'Techniques for defining
ising and manipulating rights management data structures," and lists 'InterTrust Technologies
"orp." as the assignee. Microsoft denies that the '861 Patent was duly and lawfully issued.
Microsoft further denies any and all remaining allegations of paragraph 10 of the Third Amended
Complaint

1 1 . Microsoft admits that on its face the title page of U.S. Patent No. 5,892,900
'the *900 Patent'*) states that it was issued April 6, 1999, is entitled "Systems and methods for
scure transaction management and electronic rights protection," and lists "InterTrust
echnologies Corp." as the assignee. Microsoft denies that the '900 Patent was duly and lawfully
sued. Microsoft further denies any and all remaining allegations of paragraph 1 1 of the Third
mended Complaint.

12. Microsoft admits that on its face the title page of U.S. Patent No. 5,982,891
the '891 Patent") states that it was issued November 9, 1999, is entitled "Systems and methods
»r secure transaction management and electronic rights protection," and lists "InterTrust

schnologies Corp." as the assignee. Microsoft denies that the '891 Patent was duly and lawfully

>ocssvl : 1 65623. 1 microsoft corporation's answer and

Counterclaims to intertrust's third amended
complaint, Case No. C 0 1 - 1 640 SB A

1

2
3
4
5
6
7

9

to

11

12
13

issued. Microsoft further denies any and all remaining allegations of paragraph 12 of the Third
Amended Complaint.

13. Microsoft admits that on its face the title page of U.S. Patent No. 5,917,912
("the .'912 Patent") states that it was issued June 29, 1999, is entitled "System and methods for
secure transaction management and electronic rights protection," and lists "InterTrust
Technologies Corp." as the assignee. Microsoft denies that the '912 Patent was duly and lawfully
issued. Microsoft further denies any and all remaining allegations of paragraph 13 of the Third

8 I Amended Complaint.

14. Microsoft repeats and reasserts its responses to paragraphs 1-7 of the Third
Amended Complaint, li^ifniUyrestaMr herein.'

15. Microsoft admits that the Third Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Third Amended Complaint. Microsoft

14 j denies any and all remaining allegations of paragraph 1 5 of the Third Amended Complaint.
15| 16- Microsoft denies any and all allegations of paragraph 1 6 of the Third

16 Amended Complaint.

17. Microsoft denies any. and all. allegations of paragraph 17 of the Third
Amended Complaint.

1 8. Microsoft denies any and all allegations of paragraph 1 8 of the Third
Amended Complaint.

.. . 19 - Microsoft-denies any and" all allegations of paragraphs of the Third

17
18
19
20
21
22
23
24
25
26
27
28

0RR1CK

Herrington
& sutcljffe llp

Silicon Valley

Amended Complaint.

20. Microsoft denies any and all allegations of paragraph 20 of the Third
Amended Complaint.

21 . Microsoft repeats and reasserts its responses to paragraphs 1-6 and 8 of the
Third Amended Complaint, as if fully restated herein.

22. Microsoft admits that the Third Amended Complaint purports to state a

cause of action under 35 U.S.C §§ 271 and 281 . Microsoft denies that it has infringed or now

docssv] : 1 65623.1 microsoft corporation * s answer and

Counterclaims to intertrust's third amended
complaint, Case No. C 0 1-1640 SBA

1

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

infringes the patents asserted against Microsoft in the Third Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 22 of the Third Amended Complaint.

23. Microsoft denies any and all allegations of paragraph 23 of the Third
Amended Complaint.

24. Microsoft denies any and all allegations of paragraph 24 of the Third
Amended Complaint.

25. Microsoft denies any and all allegations of paragraph 25 of the Third
Amended Complaint.

26. Microsoft denies any and all allegations of paragraph 26 of the Third
Amended Complaint. ...»

27. Microsoft denies any and all allegations of paragraph 27 of the Third
Amended Complaint.

28. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 9 of the
Third Amended Complaint, as if fully restated herein.

29. Microsoft admits that the Third Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the_Third Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 29 of the Third Amended Complaint.

30. Microsoft denies any and all allegations of paragraph 30 of the Third
Aon ended Complaint,

31. -Microsoft-denies - any-and-all-allegations of paragraph 3 1 of the Third
Amended Complaint.

32. Microsoft denies any and all allegations of paragraph 32 of the Third
Amended Complaint.

33. Microsoft denies any and all allegations of paragraph 33 of the Third
\mended Complaint.

34. Microsoft denies any and all allegations of paragraph 34 of the Third
Amended Complaint.

DOCSSVl :I65623.1 MICROSOFT CORPORATION'S ANSWER AND

Counterclaims to intertrust's third amended
complaint, Case No. C 01-1640 SBA

1

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26

35. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 10 of
the Third Amended Complaint, as if fully restated herein.

36. Microsoft admits that the Third Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 28 1 . Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Third Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 36 of the Third Amended Complaint.

37. Microsoft denies any and all allegations of paragraph 37 of the Third
Amended Complaint.

38. Microsoft denies any and all allegations of paragraph 38 of the Third
Amended Complaint.

39. Microsoft denies any and all allegations of paragraph 39 of the Third
Amended Complaint.

40. Microsoft denies any and all allegations of paragraph 40 of the Third
Amended Complaint. -

41. Microsoft denies any and all allegations of paragraph 41 of the Third
Amended Complaint.

42. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 1 1 of
the Third Amended Complaint, as if fully restated herein.

43. Microsoft admits that the Third Amended Complaint purports to state a
cause of action undo- 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Third Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 43 of the Third Amended Complaint.

44. Microsoft denies any and all allegations of paragraph 44 of the Third
Amended Complaint.

45. Microsoft denies any and all allegations of paragraph 45 of the Third
Amended Complaint.

46. Microsoft denies any and all allegations of paragraph 46 of the Third
Amended Complaint.

docssv1 ; 1 65623.1 microsoft corporation's answer and

Counterclaims to intertrust's third amended
" 5 " complaint, Case No. C 01-1640 SBA

1

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

47. Microsoft denies any and all allegations of paragraph 47 of the Third
Amended Complaint.

48. Microsoft denies any and all allegations of paragraph 48 of the Third
Amended Complaint

49. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 12 of
the Third Amended Complaint, as if fully restated herein.

50. Microsoft admits that the Third Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Third Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 50 of the Third Amended Complaint.

5 1 . Microsoft denies any and all allegations of paragraph 5 1 of the Third
Amended Complaint.

52. Microsoft denies any and all allegations of paragraph 52 of the Third
Amended Complaint.

53. Microsoft denies any and all allegations of paragraph 53 of the Third
Amended Complaint.

54. Microsoft denies any and all allegations of paragraph 54 of the Third
Amended Complaint.

55. Microsoft denies any and all allegations of paragraph 55 of the Third
Amended Complaint.

56. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 13 of
he Third Amended Complaint, as if fully restated herein.

57. Microsoft admits that the Third Amended Complaint purports to state a
;ause of action under 35 U.S.C. §§ 271 and 281, Microsoft denies that it has infringed or now
nfringes the patents asserted against Microsoft in the Third Amended Complaint. Microsoft
lenies any and all remaining allegations of paragraph 57 of the Third Amended Complaint.

58. Microsoft denies any and all allegations of paragraph 58 of the Third
Amended Complaint.

d0cssvl:1656z3.1 microsoft corporation's answer and

Counterclaims to intertrust's thjrd amended
complaint, Case No. C 01-1640 SB A

1

2
3
4
5
6
7
8
9

10
11
12
13
14
15
16
17
18
19
20
21

22

23

24

25

26

27

28

LP

59. Microsoft denies any and all allegations of paragraph 59 of the Third
Amended Complaint.

60. Microsoft denies any and all allegations of paragraph 60 of the Third
Amended Complaint.

61. Microsoft denies any and all allegations of paragraph 61 of the Third
Amended Complaint.

62. Microsoft denies any and all allegations of paragraph 62 of the Third
Amended Complaint.

AFFIRMATIVE AND OTHER DEFENSES
— Further •answering-the-Third- Amended. Complaint, Microsoft asserts the following
defenses. Microsoft reserves the right to amend its answer with additional defenses as further
information is obtained.

First Defense: Noninfringement of the Asserted Patents
63.. Microsoft has not infringed, contributed to the infringement of, or induced
the infringement of U.S. Patent No. 6,185,683 Bl ("the '683 Patent"), U.S. Patent No. 6,253,193
Bl ("the '193 Patent"), U.S. Patent No. 5,940,504 ("the '504 Patent"), U.S. Patent No. 5,920,861
("the '861 Patent"), U,S. Patent No. 5,892,900 .Ctoe ,'900 Patent"), U S,. Patent No. 5,982,891
("the '891 Patent"), or U.S. Patent No. 5,917,912 ("the '912 Patent"), and is not liable for
infringement thereof.

64. Any and all Microsoft products or methods that are accused of
infringement have substantial-uses-that do not mfringe-and-theFefore-eannot-induce or contribute
to the infringement of the '683 Patent, the '193 Patent, the '504 Patent, the '861 Patent, the '900
Patent, the '891 Patent, or the '912 Patent.

Second Defense: Invalidity of the Asserted Patents

65. On information and belief, the '683 Patent, me '193 Patent, the '504 Patent
the '861 Patent, the '900 Patent, the '891 Patent, and the '912 Patent are invalid for failing to
iomply with the provisions of the Patent Laws, Title 35 U.S.C., including without limitation one
3rmoreof35U.S.C. §§ 102, 103 and 112.

d0cssv1:i6j623.1 microsoft corporation's answer and

Counterclaims to intertrust's third amended
complaint, Case No. C 01-1640 SBA

1

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

Third Defease; Unavailability of Relief

66. On information and belief, Plaintiff has failed to plead and meet the
requirements of 35 U.S.C. § 271(b) and (c) and is not entitled to any alleged damages prior to
providing any actual notice to Microsoft of the '683 Patent, the '193 Patent, the '504 Patent, the
'861 Patent, the '900 Patent, the '891 Patent, or the '912 Patent.

Fourth Defense: Unavailability of Relief

67. On information and belief, Plaintiff has failed to plead and meet the
requirements of 35 U.S.C. § 284 for enhanced damages and is not entitled to any damages prior to
providing any actual notice to Microsoft of the '683 Patent, the '193 Patent, the '504 Patent, the
'861 Patent, the '900 Patent, the '891 Patent, and/or the '912 Patent and any alleged infringement
thereof.

Fifth Defense; Unavailability of Relief

68. On information and belief, Plaintiff has failed to plead and meet the
requirements of 35 U.S.C. § 287, and has otherwise failed to show that it is entitled to any
damages.

Sixth Defense; Prosecution History Estoppel

69. Plaintiffs alleged causes of action for patent infringement are barred under
the doctrine of prosecution history estoppel, and Plaintiff is estopped Scorn claiming that the '683
Patent, the '193 Patent, the '504 Patent, the '861 Patent, the '900 Patent, the '891 Patent, and/or
the '912 Patent covers or includes any accused Microsoft product or method.

Seventh Defense: Dedication to the Public

70. Plaintiff has dedicated to the public all methods, apparatus, and products
disclosed in the '683 Patent, the '193 Patent, the '504 Patent, the '861 Patent, the '900 Patent, the
'891 Patent, and/or the '912 Patent, but not literally claimed therein, and is estopped from
claiming infringement by any such public domain methods, apparatus, and products.

Eighth Defense: Use/Manufacture Bv/For United States Government

71. To the extent that any accused product has been used or manufactured by

or for the United States, Plaintiffs claims and demands for relief are barred by 28 U.S.C. § 1498.

docssvl :i65623.i microsoft corporation's answer and

Counterclaims to intertrost's third amended
"°" complaint, Case No. C 01 -1640 SB A

1

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24

Ninth Defense: License

72 . To the extent that any of Plaintiff s allegations of infringement are
premised on the alleged use, sale, offer for sale, license or offer of license of products that were
manufactured by or for a licensee of LiterTrust and/or provided by or to Microsoft by or to a
licensee of InterTrust, such allegations are barred pursuant to license.

Tenth Defense: Acquiescence

73. Plain tiff has acquiesced in at least a substantial part of the Microsoft
conduct alleged to infringe.

Eleventh Defense: Laches

■.S4z' -: Plaintiff ^^s claims^forrelief^re barred, in whole or-m partrby the equitable
doctrine of laches.

Twelfth Defense: Inequitable Conduct

75. The '861 Patent claims are unenforceable due to inequitable conduct*
ncluding those acts and failures to act set forth in Microsoft's Counterclaim for Declaratory
Fudgment of Unenforceability of the '861 Patent, set forth below.

Thirteenth Defense: Inequitable Conduct

76. The '900 Patent claims are unenforceable due to inequitable conduct,
ncluding those acts and failures to act set forth in Microsoft's Counterclaim for Declaratory
udgment of Unenforceability of the '900 Patent, set forth below.

Fourteenth Defense: Unenforceability
... 77. Tbeclaims of the '891 Patent, the '912 PatenVthe '861 Patent, the '683
'atent, the '193 Patent and the '900 Patent are unenforceable due to unclean hands, inequitable
induct and misuse and illegal extension of the patent right, including those acts and failures to
ct set forth in Count XI of Microsoft's Counterclaims, set forth below.
//
//
//
II

docssvl :1 65623.1 microsoft corporation's answer and

Counterclaims to intertrust's third amended
complaint, Case No. C 01 - 1 640 SBA

1

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

COUNTERCLAIMS

COUNT I - DECLARATORY
JUDGMENT OF NONINFRINGEMENT

78. This action ; arises under the patent laws of the United States, Title 35
U.S.C. §§ 1, etseq. This Court has subject matter jurisdiction over this counterclaim under 28
•J.S.C. §§ 1338, 2201, and 2202.

79. Microsoft Corporation ("Microsoft") is a Washington corporation with its
jrincipal place of business in Redmond, Washington.

80. On information and belief, Plaintiff /Counterclaim Defendant InterTrust
technologies Corporation ('HnterTrust'^is a Delaware corporation with its principal place of
business in Santa Clara, California.

81. InterTrust purports to be the owner of U.S. Patent Nos. 6,185,683 Bl ("the
683 Patent"), 6,253,193 Bl ("the '193 Patent"), 5,940,504 ("the '504 Patent"), 5,920,861 ("the
861 Patent"), U.S. Patent No. 5,892,900 ("the '900 Patent"), U.S. Patent No. 5,982,891 ("the
891 Patent"), and U.S. Patent No. 5,917,912 ("the '912 Patent*).

82. InterTrust alleges that Microsoft has infringed the '683 Patent, the ' 1 93
>atent, the '504 Patent, the '861 Patent, the '900 Patent, the '891 Patent, and the '912 Patent.

83. No Microsoft product has infringed, either directly or indirectly, any claim
»f the '683 Patent, the '193 Patent, the '504 Patent, the '861 Patent, the '900 Patent, the '891
'atent, or the '912 Patent, and Microsoft is not liable for infringement thereof.

84. An actual controver s y, withii ^fre-meafl^eg 28 U.S.C. §§ 2201 and 2202,
xists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to the
ifringement or noninfringement of the '683 Patent, the '193 Patent, the '504 Patent, the '861
atent, the '900 Patent, the '891 Patent, and/or the '912 Patent

COUNT n - DECLARATORY JUDGMENT
OF INVALIDITY OF THE '683 PATENT

85. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims, as if
illy restated herein.

30CSSV 1:1 65623.1 MICROSOFT CORPORATION'S ANSWER AND

n Counterclaims to intertrust's third amended
complaint, Case No. C 01-1640 SBA

1

2
3
-4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

86. The '683 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 1 12.

87. An actual controversy, within the meaning of 28 U.S.C. §§ 220 1 and 2202,

existsJbetween Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '683 Patent are valid or invalid.

COUNT HI - DECLARATORY JUDGMENT
OF INVALIDITY OF THE '193 PATENT

88. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
fully restated herein.

89. Tie-' 193 Patented each -claim thereof, is mvalid-forfailingla comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 112.

90. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '193 Patent are -valid or invalid.

COUNT IV - DECLARATORY JUDGMENT
OF INVALIDITY OF THE '504 PATENT

9 1 . Microsoft repeats and realleges paragraphs 1 -5 of its Counterclaims as if
fully restated herein.

92. The '504 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 1 12.

93. An actual controversy, within the meaning of 28 U.SiC. §§-2201 and 2202,
sxists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '504 Patent are valid or invalid.

COUNT V - DECLARATORY JUDGMENT
OF INVALIDITY OF THE '861 PATENT

94. Microsoft repeats and realleges paragraphs 1 -5 of its Counterclaims as if
lully restated herein.

DOCSSVl:l65623.l

-11-

Microsoft Corporation's Answer and
Counterclaims to inter trust's third amended
complaint, Case NO. C 01-1640 SBA

1

2
3
4
5
6
7
8

9
-10

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

95. The *861 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 112.

96. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

exists between Microsoft, on the one_hand, and InterTrust, on the other hand, with respect to

whether the claims of the '861 Patent are valid or invalid.

COUNT VI - DECLARATORY JUDGMENT
OF INVALIDITY OF THE '900 PATENT

97. Microsoft repeats and realleges paragraphs 1 -5 of its Counterclaims as if
fully restated herein.

93 .... The.'900 Patent, and eaeh-claim-thereof; is invalid for failing to comply

with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 1 12.

99. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '900 Patent are valid or invalid.

COUNT VII - DECLARATORY JUDGMENT
OF INVALIDITY OF THE '891 PATENT

1 00. Microsoft repeats and realleges paragraphs 1 -5 of its Counterclaims as if
fully restated herein.

101. The '891 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 112.

102. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '891 Patent are valid or invalid.

COUNT Vm - DECLARATORY JUDGMENT
OF INVALIDITY OF THE '912 PATENT

103. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
fully restated herein.

D0CSSV1:165623.I

Microsoft Corporation's Answer and
Counterclaims to intertrust's third amended
coMPLAfNT, Case No. C 01-1640 SBA

1

2
3

...4.
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24

1 04. The '912 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 1 02, 1 03, and 1 1 2.

105. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exisls_helw.eenJylicrosoft, on ihe.oneJiand,.and_tater.Trust, on the other hand, with respect to
whether the claims of the '912 Patent are valid or invalid.

COUNT IX - DECLARATORY JUDGMENT
OF UNENFORCEABILITY OF THE '861 PATENT

106. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims, as if
fully restated herein.

- 1 07. Claims l-l^oftiie^l $ atentrappheation^Si* 08/8057804), and claims
1-101 of the '861 Patent, were not and are not entitled to the benefit of any application filing date
prior to February 25, 1997, under 35 U.S.C. § 120 or otherwise.

1 08. "Exhibit A" refers to the document attached as Exhibit A to Microsoft's
counterclaims filed in response to InterTrust's Second Amended Complaint (namely, a reprint of
an article entitled "DigiBox: A Self-Protecting Container for Information Commerce").

109. On information and belief, the content of pages 2-14 of Exhibit A was
presented at a public conference in the United States in July 1 995.

1 10. "Exhibit B" refers to the document attached as Exhibit B to Microsoft's
jounterclaims filed in response to InterTrust's Second Amended Complaint (namely, a copy of a
page from an International Application published under the Patent Cooperation Treaty (PCT),
searmg International Publication^IumbeFWO-96/27 155) .— - - —

111. On information and belief, International Application WO 96/271 55 has, at
ill times since its filing date, been owned and controlled by InterTrust or its predecessors in
nterest.

1 12. International Application WO 96/27155 (hereafter "the WO 96/27155
PCT) publication") was published on September 6, 1996.

1 13. United States Patent No. 5,910,987 ("the '987 Patent") issued on June 8,

.999, from a continuation of an application filed on February 13, 1995.

docssvl : 1 65623.1 microsoft corporation's answer and

Counterclaims to intertrust's third amended
' complaint, Case No. C 01 -1 640 SBA

1

2
3
4.
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24

1 14. The Sibert article is prior art to claims 1-129 of the '861 Patent application
(SN 08/805,804).

115. The Sibert article is prior art to claims 1-101 of the '861 Patent under 35
U.S.C. §§ J02(b) '..

116. The WO 96/27155 (PCT) publication is prior art to claims 1-129 of the
'861 Patent application (SN 08/805,804).

1 1 7. The WO 96/27.1 55 (PCT) publication is prior art to claims 1 - 1 0 1 of the
'861 Patent under 35 U.S.C. §§ 102(a).

1 18. The '987 Patent is prior art to claims 29-129 of the '861 Patent application

(SN 08/805,804). -

119. The '987 Patent is prior art to claims 1 - 1 01 of the *861 Patent, under 3 5
U.S.C. §§ 102(e),

120. The Sibert article was material to the patentability of claim 1 of the '861
Patent application (SN 08/805,804).

121. The Sibert article was material to the patentability of claims 2-129 of the
'861 Patent application (SN 08/805,804).

122. The W.O 96/27155 (PCT) publication was material to the patentability of
claim 1 of the '861 Patent application (SN 08/805,804).

123. The WO 96/27155 (PCT) publication was material to the patentability of
claims 2-129 of the '861 Patent application (SN 08/805,804).

1 24. The- '987 Patent was material to the patentability of claims 29-1 29 of the
'861 Patent application (SN 08/805,804).

125. One or more of the '86 1 Patent applicants knew, while the ' 86 1 Patent
application (SN 08/805,804) was pending, of the July 1995 publication of the Sibert article.

1 26. On information and belief, one or more of the '861 Patent applicants knew,
while the '861 Patent application (SN 08/805,804) was pending, of the September 1996
publication of the WO 96/27155 (PCT) publication.

DOCSSVI: 165623.1

-14-

Microsoft Corporation's Answer and
Counterclaims to intertrust's third amended
complaint, Case No. C 01-1640 SBA

1

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

127. One or more of the 4 861 Patent applicants knew, while the '861 Patent
application. (SN 08/805,804) was pending, of the June 8, 1999 issuance of the 4 987 Patent.

128. On information and belief, one or more of the attorneys who prosecuted or
assisted in prosecuting the '861 Patent application (SN 08/805,804) knew, while that application
was pending, of the July 1995 publication of the Sibert article.

129. One or more of the attorneys who prosecuted or assisted in prosecuting the
'861 Patent application (SN 08/805,804) knew, while that application was pending, of the
September 1996 publication of the WO 96/27155 (PCT) publication.

130. One or more of the attorneys who prosecuted or assisted in prosecuting the
*861 Patent application (SN 08/805,804) knew, while that application was pending, of the June 8,
1999 issuance of the '987 Patent-

131. The applicants for the *86 1 Patent did not cite the Sibert article as prior art
to any of claims 1-129 of the *861 Patent application (SN 08/805,804).

132. The applicants for the '861 Patent did not cite the WO 96/27155 (PCT)
publication to the Patent Office as prior art to any of claims 1-129 of the '861 Patent application
(SN 08/805,804).

1 33. The i^plicantsjbr the ^8AlPataal Jid not.rite Jthe.!987_Pat.OTt to the Patent
Office as prior art to any of claims 1-129 of the *861 Patent application (SN 08/805,804).

1 34. The applicants for the '86 1 Patent did not cite to the Patent Office as prior
art to any of claims 1-129 of the *861 Patent application (SN 08/805,804) any reference having
the same or substantially the -same-disclosure as-&e^ibert-arti<rfe-.- - - —

135. The applicants for the *861 Patent did not cite to the Patent Office as prior
irt to any of claims 1-129 of the '861 Patent application (SN 08/805,804) any reference having
he same or substantially the same disclosure as the WO 96/27155 (PCT) publication.

136. The applicants for the '861 Patent did not cite to the Patent Office as prior
irt to any of claims 1-129 of the '861 Patent application (SN 08/805,804) any reference having
he same or substantially the same disclosure as the '987 Patent.

D0CSSVI-.I65623.1

-15-

Microsoft Corporation's Answer and
Counterclaims to [NTertrust's third amended
complaint, Case No. C 01-1640 SB A

1 137. The Sibert article is not merely cumulative over any reference cited as prior

2 art during the prosecution of the ' 861 Patent application (SN 08/805,804).

3 138. The WO 96/27155 (PCT) publication is not merely cumulative over any

4 reference cited as prior art during the prosecution of the '861 Patent application (SN 08/805,804).

5 139. The '987 Patent is not merely cumulative over any reference cited as prior

6 art during the prosecution of the '861 Patent application (SN 08/805,804).

7 140. On information and belief, one or more of the '861 Patent applicants

8 believed, during pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the

9 Sibert article disclosed an embodiment of claim 1 of the '861 Patent application (SN 08/805,804).

10 141. InterTrust contends that none of the * 86 1 Patent applicants believed, during

1 1 pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the Sibert article

12 discloses an embodiment of claim 1 of the *861 Patent application (SN 08/805,804).

13 142. On information and belief, one or more of the '861 Patent applicants

14 believed, during pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the

1 5 WO 96/27155 (PCT) publication disclosed an embodiment of claim 1 of the '861 Patent

1 6 application (SN 08/805,804).

1 7 143. It is InterTrust's contention that none of the *861 Patent applicants

1 8 believed, during pendency of claim 1 of the 4 861 Patent application (SN 08/805,804), that the

1 9 WO 96/27155 (PCT) publication discloses an embodiment of claim 1 of the '861 Patent

20 application (SN 08/805,804).

21 144. On information and belief, one or more of the '861 Patent applicants

22 believed, while the '861 Patent application (SN 08/805,804) was pending, that the Sibert article

23 was material to the patentability of claims 1-129 of the '861 Patent application (SN 08/805,804),

24 but, with deceptive intent, failed to disclose that reference as prior art to the Patent Office.

25 145. On information and belief, one or more of the '861 Patent applicants

26 [ believed, while the '861 Patent application (SN 08/805,804) was pending, that the WO 96/27155

27 | (PCT) publication was material to the patentability of claims 1-129 of the '861 Patent application
28

Orrick

Herrington
Bl Sutcliffe LLP

SlLICOW VALLiV

D0CSSV1:165623.1

-16-

Microsoft Corporation's Answer and
Counterclaims to intertrust's third amended
complaint, Case No. C 01-1640 SBA

8
9

10
11
12
13
14
15
16
17
18
19

20

21

22

23

24

25

26

27

28

(SN 08/805,804), but, with deceptive intent, failed to disclose that reference as prior art to the
Patent Office.

146. On information and belief, one or more of the '861 Patent applicants
believed, while the '861 Patent_application (SN 08/805,804) was pending, that the '987 Patent
was material to the patentability of claims 29-129 of the '861 Patent application (SN 08/805,804),
but, with deceptive intent, failed to disclose that reference as prior art to the Patent Office.

147. The '861 Patent is unenforceable due to the inequitable conduct of the *861
Patent applicants before the Patent and Trademark Office in connection with the *861 Patent
application (SN 08/805,804).

•■ - — -l. -7 — . 148. - An actual-controversy, wiftin-thCTneaning-of 28~U.S,€. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '861 Patent are enforceable.

COUNT X - DECLARATORY JUDGMENT
OF UNENFORCEABILITY OF THE '900 PATENT

149. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims, as if
fully restated herein.

150. The application and issued claims of the *900 Patent were not and are not
entitled to the benefit of any application filing date prior to August 30, 1996, under 35 U.S.C. §
120 or otherwise.

151. Microsoft repeats and realleges paragraphs 3 i -32 of its Counterclaims, as if
iilly restated-herein. - - -

152. The Sibert article is prior art to the application and issued claims of the
900 Patent under 35 U.S.C. § 102(a), 103.

1 53. The Sibert article was material to the patentability of application and issued
laims of the *900 Patent, including, for example, issued claims 86 and 182.

1 54. One or more of the '900 Patent applicants knew of the July 1 995
publication of the Sibert article while the '900 Patent application was pending.

DOCSSVU65623.I

Microsoft Corporation's Answer and
Counterclaims to intertrust's third amended
complaint, Case No. C 0 1 - 1 640 SB A

1

2
3
4
5
6
7
8
9

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

155. On information and belief, one or more of the attorneys who prosecuted or
assisted in the prosecution of the '900 Patent application knew of the July 1995 publication of the
Sibert article while the '900 Patent application was pending.

156. The applicants for the '900 Patent did not cite the Sibert article to the
Patent Office as prior art to any claims of the *900 Patent application (SN 08/706,206).

157. The applicants for the '900 Patent did not cite to the Patent Office as prior
art to any claims of the '900 Patent application (SN 08/706,206) any reference having the same or
substantially the same disclosure as the Sibert article.

158. The Sibert article is not merely cumulative over any reference cited as prior
art during the prosecution ofthe^SOftfatent application (SN 08/706,206):

1 59. On information and belief, one or more of the '900 Patent applicants
Relieved, during pendency of claim 1 of the '900 Patent application (SN 08/706,206), that the
Sibert article disclosed an embodiment of claim 1 of the '900 Patent application (SN 08/706,206).

1 60. On information and belief, one or more of the '900 Patent applicants
)elieved, while the '900 Patent application (SN 08/706,206) was pending, that the Sibert article
vas material to the patentability of various claims of the '900 Patent application (SN 08/706,206),
mt, with deceptive intent, failed to disclose that reference as prior art to the Patent Office.

161. International Application WO 96/27155 (hereafter "the WO 96/27155
PCT) publication") was published on September 6, 1 996.

1 62. The WO 96/27 1 55- (PCT) publication is prior art to the application and
ssued claims of the '900 Patent - • - - — -

1 63 . The WO 96/271 55 (PCT) publication was material to the patentability of
arious application and issued claims of the '900 Patent, including issued claims 86 and 182.

1 64. On information and belief, one or more of the '900 Patent applicants knew,
/hile the '900 Patent application (SN 08/706,206) was pending, of the September 1996
ublication of the WO 96/27155 (PCT) publication.

:165623.l

-18-

Microsoft Corporation's Answer and
Counterclaims to intertrust's third amended
"complaint, Case No. C 01-1640 SBA

1

2
3
A
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

165. One or more of the attorneys who prosecuted or assisted in prosecuting the
'900 Patent application (SN 08/706,206) knew, while that application was pending, of the
September 1996 publication of the WO 96/27155 (PCT) publication.

166. .Tbe.app.lic.ants for the '900 .Patent did not cite.the WO 96/27155 (PCT)
publication to the Patent Office as prior art to any claims of '900 Patent application (SN
08/706,206).

167. The applicants for the '900 Patent did not cite to the Patent Office as prior
art to any claims of the '900 Patent application (SN 08/706,206) any reference having the same or
substantially the same disclosure as the WO 96/27155 (PCT) publication.

1 68. The^WO 96/27155 (PCT) publication is not merely cumulative over any
reference cited as prior art during the prosecution of the '900 Patent application (SN 08/706,206).

169. On information and belief, one or more of the '900 Patent applicants
believed, while the '900 Patent application (SN 08/706,206) was pending, that the WO 96/27155
(PCT) publication was material to the patentability of various claims of the '900 Patent
application (SN 08/706,206), but, with deceptive intent, failed to disclose that reference as prior
art to the Patent Office.

1 70. The '900 Patent is unenforceable due to the inequitable conduct of the '900
Patent applicants before the Patent and Trademark Office in connection with the '900 Patent
application (SN 08/706,206).

171. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '900 Patent are enforceable.

COUNT XI - DECLARATORY JUDGMENT
OF UNENFORCEABILITY

172. Microsoft repeats and realleges paragraphs 1-5 and 30-94 of its
Counterclaims, as if fully restated herein.

173. The '891 Patent, the '912 Patent, the '683 Patent, the '193 Patent, the '861

Patent, and the '900 Patent are referred to as the Count XI Patents.

docssv]:16f623.1 microsoft corporation's answer and

Counterclaims to intertrust's third amended
complaint, Case No. C 01 - 1640 SBA

1

2
3
4
5
6
7
8
9
TO
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

1 74. In prosecuting, marketing, and enforcing the Count XI Patents, InterTrust
has engaged in a pattern of obfuscation as to the scope of the patents, the prior art to the patents,
and the alleged "inventions" of the patents. For example, InterTrust has accused non-infringing
products of infringement, Jias buried Patent Office Examiners with a collection of more than 400
references, many of which were not related to the particular claims in issue, and has buried the
Examiners with hundreds or thousands of pages of redundant, verbose, unclear text, effectively
prohibiting a real comparison of the alleged "invention" versus the prior art. This pattern of
intentional conduct constitutes an abuse of the patent system, unclean hands, misuse and illegal
extension of the patent right, rendering the Count XI patents unenforceable, as well as invalid
under Section 412.' - - ~-.:^=r_—

175. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '891 Patent, the '912 Patent, the '683 Patent, the '193 Patent, the '861

Patent, and the '900 Patent are enforceable.

COUNT XII - INFRINGEMENT
OF U.S. PATENT NO. 6.049.671

176. Microsoft repeats and realleges paragraphs 2-3 of its Counterclaims, as if
fully restated herein.

177. This Court has exclusive subject matter jurisdiction over Microsoft's cause
of action for patent infringement under Title 28, United States Code, Sections 1331 and 1338, and
under the patent laws of the United States, Title 35 of the United States Code.

178. U.S. Patent No. 6,049,671 ("the '671 Patent") issued to Microsoft
Corporation as the assignee of Benjamin W. Slivka and Jeffrey S. Webber on April 11, 2000.

1 79. A true copy of the '67 1 Patent is attached as Exhibit C to Microsoft's
counterclaims filed in response to InterTrust's Second Amended Complaint, and is incorporated
herein by reference.

180. Microsoft owns all right, title and interest in the '671 Patent.

181. InterTrust has had actual notice of the '67 1 Patent.

DOCSSV 1 :1 63623. 1 MICROSOFT CORPORATION 'S ANSWER AND

Counterclaims to intertrust's third amended
complaint, Case No. C 01-1640 SB A

1

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

182. InterTrust has infringed one or more claims of the ' 67 1 Patent, in violation
of at least 35 U.S.C. § 271 (a, b, c).

1 83. InterTrust's infringement of the '671 Patent has caused and will continue to
cause Microsoft damage, jncJuding irreparable harm for which it has no adequate remedy at law.

COUNT XIII * INFRINGEMENT
OF U.S. PATENT NO. 6.256.668

1 84. Microsoft repeats and realleges paragraphs 2-3 and 100 of its
Counterclaims, as if fully restated herein.

185. U.S. Patent No. 6,256,668 Bl ("the '668 Patent") issued to Microsoft
Corporation as the assignee^ ©enj amin W. Slivka-and-Jeffrey S; rWebber-orr July-3, 200 1 .

1 86. A true copy of the '668 Patent is attached as Exhibit D to Microsoft's
counterclaims filed in response to InterTrust's Second Amended Complaint, and is incorporated
herein by reference.

1 87. Microsoft owns all right, title and interest in the '668 Patent. •

1 88. InterTrust has had actual notice of the '668 Patent.

1 89. InterTrust has infringed one or more claims of the '668 Patent, in violation
of at least 35 U.S.C. § 271(a, b, c).

190. InterTrust's infringement of the '668 Patent has caused and will continue to
cause Microsoft damage, including irreparable harm for which it has no adequate remedy at law.

PRAYER FOR RELIEF
WHEREFORE* Microsoft prays for the following relief:

A. The Court enter judgment against InterTrust, and dismiss with prejudice,
any and all claims of the Third Amended Complaint;

B. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '683 Patent;

C. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the ' 193 Patent;

DOCSSVl: 165623.1

-21-

Microsoft Corporation's Answer and
Counterclaims to intertrust's third amended
complaint, Case No. C 01 - 1 640 SBA

1

2
3
_4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

D. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '504 Patent;

E. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced__infringemCTt of the '861 Patent;

R The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '900 Patent;

G. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of r or induced infringement of the '891 Patent;

H. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '912 Patent;

I. The Court enter judgment declaring that the '683 Patent is invalid;
J. The Court enter judgment declaring that the * 193 Patent is invalid;
K. The Court enter judgment declaring that the '504 Patent is invalid;
L, The Court enter judgment declaring that the '861 Patent is invalid;
M. The Court enter judgment declaring that the '900 Patent is invalid;
N. The Court enter judgment declaring that the '891 Patent is invalid;
O. The Court enter judgment declaring . that the *912 Patent is invalid;

P. The Court enter judgment declaring that the 4 86 1 Patent is unenforceable
due to inequitable conduct;

Q. The Court enter judgment declaring that the '900 Patent is unenforceable
dueto inequitable conduct;- -— -

R. The Court enter judgment declaring that the '891 Patent, the '912 Patent,
the '683 Patent, the '193 Patent, the '861 Patent and the '900 Patent is unenforceable due to an
ibuse of the patent system, unclean hands, and misuse and illegal extension of the patent right;

S. The Court enter judgment that InterTrust has infringed the '671 Patent;

T. The Court enter judgment that InterTrust has infringed the '668 Patent;

U. The Court enter a permanent injunction prohibiting InterTrust, its officers,

igents, servants, employees, and all persons in active concert or participation with any of them

docssvl ;165623. 1 microsoft corporation's answer and

Counterclaims to intertrust's third amended
"22- complaint, Case No. C 01-1640 SB A

1

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

from infringing the '671 and '668 Patents;

V. The Court award damages and attorney fees against InterTrust pursuant to
the provisions of 35 U.S.C §§ 284 and 285;

. W. TheC_purt.aw.ard to_Microsoft pre-judgment interest and the costs of this

action;

X. The Court award to Microsoft its reasonable costs and attorneys' fees; and
Y. The Court grant to Microsoft such other and further relief as may be
deemed just and appropriate.

JURY DEMAND

-Pursuant to-Eed. R; Civ. P. 38(b), Defendant Microsoft Corporation demands a

trial by jury.

DATED: November 8, 2001

WILLIAM L. ANTHONY
ERICL. WESENBERG
MARK R. WEINSTEIN
ORRICK HERRINGTON & SUTCLIFFE, LLP
1000 Marsh Rbad
Menlo Park, CA 94025
Telephone: 650-614-7400

STEVEN ALEXANDER
KRISTIN L. CLEVELAND
JAMES E. GERINGER
JOHN D. VANDENBERG
KLARQUIST SPARKMAN, LLP
One World Trade Center, Suite 1600
121 S.W. Salmon Street
Portland, OR 97204
Telephone: (503) 226-7391
Attorneys for Defendant
Microsoft Corporation

Of Counsel:

T. ANDREW CULBERT, Esq.
One Microsoft Way
Building 8

Redmond, WA 98052-6399
Phone: 425-882-8080

DOCSSVl:l65623.1

-23-

Microsoft Corporation's Answer and
Counterclaims to intertrust's third amended
complaint, Case No. C 0 1 - 1 640 SB A

1

2
3

-4
5
6
7
8
9

10
11
12
13
14
15
16
17
18
19

20

21

22

23

24

25

26

27

DECLARATION OF SERVICE VIA ELECTRONIC MAIL AND U.S. MAIL

I am more than eighteen years old and not a party to this action. My place of
employment and business address is 1000 Marsh Road, Menlo Park, California 94025.
On November-8, 2001, 1 served:

MICROSOFT CORPORATION'S ANSWER AND COUNTERCLAIMS TO
INTERTRUST'S THIRD AMENDED COMPLAINT; JURY DEMAND

By transmitting a copy of the above-listed document(s) in PDF form via electronic mail Michael
H. Page at mhp@kvn.com, Christopher P. Isaac at chris.isaac@fmnegan.com and James E.
Geringer at james.geringer@klarquist.com and also by placing true and correct copies of the
abWe-documenls in an enveloplFade^yseffto:

Christopher P. Isaac, Esq.
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
1300 1. Street, N.W.
Washington, DC 20005-3314
Tel. No. 202-408-4000
Fax No. 202-408-4400
Email: chris.isaac@flnnegan.com

Attorneys for Plaintiff
INTERTRUST TECHNOLOGIES
CORPORATION

John D. Vandenberg, Esq.

James E. Geringer, Esq.

KLARQUIST, SPARKMAN, CAMPBELL,

LEIGH & WHINSTON LLP

One World Trade Center

121 S. W. Salmon Street, Suite 1600

Portland, Oregon 97204

Tel. No: 503-226-7391

Fax No: 503-228-9446

Email: john.vandenberg@klarquist.com

Email: james.geringer@klarquist.com

Attorneys for Defendant and
Counterclaimant, MICROSOFT
CORPORATION

John W. Keker, Esq.
Michael H. Page, Esq.
KEKER & VAN NEST, LLP
710 Sansome Street
San Francisco, California 94111
Tel. No. 415-391-5400
Fax No. 415-397-7188
Email: jwk@kvn.com
Email: mbp@kvn.com

Attorneys for Plaintiff
INTERTRUST TECHNOLOGIES
CORPORATION

Stephen E. Taylor, Esq. (Served by TJ.S. Mafl Only)
TAYLOR & CO. LAW OFFICES
1050 Marina.yillage Parkway, Suite 101
/Vlameda, CA 94501
rel.No. 510-865-9401
Fax No. 510-865-9408

Attorneys for Plaintiff
INTERTRUST TECHNOLOGIES
CORPORATION

DOCSSVV.164899.1

1

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26

and sealing the envelope, affixing adequate first-class postage and depositing it in the U.S. mail
at Menlo Park, California.

Executed on November 8, 2001 at Menlo Park, California.

I declare.under.penalty .of perjury that.the foregoing is true and correct.

(SIGNATURE)

(PRINT NAME)

DOCSSV1M64899.1

-2-